Buying or Selling IPv4 Addresses?

Watch this video to discover how ACCELR/8, a transformative trading platform developed by industry veterans Marc Lindsey and Janine Goodman, enables organizations to buy or sell IPv4 blocks as small as /20s.

Depending on the facts and circumstances of a particular case, and irrespective of whether the parties may also be engaged in court litigation, in some instances (e.g., complex business or contractual disputes) panels have tended to deny the case not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited "cybersquatting" scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction.

'Contractual and Trademark Dispute'

A UDRP panel addressed this exact issue in a dispute over the domain name <lamborghini-store.com>. The UDRP complaint was filed by the owner of the trademark TONINO LAMBORGHINI "in numerous countries all over the world" for use in connection with, among other things, cell phones, according to the decision.

The respondent in the case claimed, "that he is an official dealer of the Complainant through an authorization letter from the Complainant's licensee."

While the panel had no problem finding the disputed domain name <lamborghini-store.com> confusingly similar to the TONINO LAMBORGHINI trademark (the first element of the UDRP), the panel had concerns about even addressing the second and third elements of the UDRP (that is, whether the registrant had rights or legitimate interests in the domain name; and whether the registrant registered and used the domain name in bad faith).

As a result, the panel wrote:

The Panel notes that this dispute seems to be part of a contractual and trademark dispute that is outside the scope of the Policy. In this case, it is not clear whether or not the Respondent was an authorized agent of the Complainant or of a licensee of the Complainant when it registered the disputed domain name in 2015. The Respondent has submitted several contract and authorization letters which do not clarify this. It is beyond the scope of the Policy to interpret agreements between the Parties or to determine whether they have breached the Complainant's trademark.

Therefore, the panel dismissed the complaint, allowing the registrant to retain the domain name.

Complex Facts, Breaches of Contract, and Business Relationships

The conclusion in the LAMBORGHINI case — that the dispute was "beyond the scope" or "outside the scope" of the UDRP — has appeared repeatedly in UDRP decisions through the years.

For example:

A very early UDRP decision raised interesting issues, including a discussion about two criminal cases in Estonia related to a possible unlawful transfer of the disputed domain name <aquastel.com>. "Under these proceedings the complete correct facts can probably not be proved," the panel wrote, also noting that it "cannot know on this record the full extent of the relationship between the parties." Thus, the panel allowed the registrant to keep the domain name because the "case is much more complex, factual and judicial than the domain name disputes suitably solved under the Policy."

In another early UDRP decision, involving the domain name <thethread.com>, the respondent was actually a co-founder of the company that filed the UDRP complaint and purchased the domain name "on the Complainant's behalf" but in the respondent's own name. The dispute arose after the respondent resigned. "[T]his is not a garden-variety cybersquatting case," the panel wrote. "In fact, it is not a cybersquatting case at all. Rather, this appears to be a breach of contract and breach of fiduciary duty dispute between former partners."

Similarly, another UDRP decision referred to "a long term business relationship" between the complainant and respondent, which "has evidently now unravelled," resulting in other (non-UDRP) proceedings between the parties. So, the panel terminated the case, writing: "In light of the existence of the parallel litigation, and the complex factual matrix which underlies the dispute and which has not been fully disclosed, the Panel finds that this Complaint is beyond the scope of the Policy at the present time."

Think Before Filing

Of course, just because a dispute is complicated doesn't necessarily mean that it's not suitable for the UDRP. But, as these cases demonstrate, when the issues between the parties involve criminal allegation, contractual disputes or other litigation, a UDRP panel may decline to issue a decision on the merits of the case. (The parties may then choose to go to court for a legal resolution.)

Importantly, complicated cases of any kind are typically not appropriate for disputes under the Uniform Rapid Suspension System (URS), a different dispute policy that applies primarily to the "new" gTLDs. The URS itself makes clear that it is "not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse."

A trademark owner thinking about filing a UDRP complaint should consider whether the issues in dispute are "beyond the scope" of the policy, to ensure that its time and financial resources are spent in the proper forum.

If you are pressed for time ...

... this is for you. More and more professionals are choosing to publish critical posts on CircleID from all corners of the Internet industry. If you find it hard to keep up daily, consider subscribing to our weekly digest. We will provide you a convenient summary report once a week sent directly to your inbox. It's a quick and easy read.

I make a point of reading CircleID. There is no getting around the utility of knowing what thoughtful people are thinking and saying about our industry.

Vinton Cerf, Co-designer of the TCP/IP Protocols & the Architecture of the Internet

Share your comments

Related

The European Commission recently released technical input on ICANN's proposed GDPR-compliant WHOIS models that underscores the GDPR's "Accuracy" principle - making clear that reasonable steps should be taken to ensure the accuracy of any personal data obtained for WHOIS databases and that ICANN should be sure to incorporate this requirement in whatever model it adopts. Contracted parties concerned with GDPR compliance should take note. more

There is an urgent need to clarify the GDPR's territorial scope. Of the many changes the GDPR will usher in this May, the expansion of EU privacy law's territorial scope is one of the most important. The GDPR provides for broad application of its provisions both within the EU and globally. But the fact that the GDPR has a broad territorial scope does not mean that every company, or all data processing activities, are subject to it. more

When you've been around the domain industry for as long as I have, you start to lose track of time. I was reminded late last year that the 6-year agreement Verisign struck with ICANN in 2012 to operate .com will be up for expiration in November of this year. Now, I don't for a second believe that .com will be operated by any other party, as Verisign's contract does give them the presumptive right of renewal. But what will be interesting to watch is what happens to Verisign's ability to increase the wholesale cost of .com names. more

Panels appointed to hear and decide disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have long recognized that three letter domains are valuable assets. How investors value their domains depends in part on market conditions. Ordinarily (and for good reason) Panels do not wade into pricing because it is not a factor on its own in determining bad faith. more

Cryptocurrencies (such as Bitcoin) are all the rage -- so, naturally, related domain name disputes are, too. The wild fluctuations in cryptocurrency prices (Bitcoin hit a low of close to $6,000 this week, after reaching an all-time high of more than $19,000 only two months ago, and less than $1,000 a year ago) have attracted speculators, regulators and now even cybersquatters. more

With GDPR coming into effect this May, it is almost a forgone conclusion that WHOIS as we know it today, will change. Without knowing the full details, how can companies begin to prepare? First and foremost, ensuring that brand protection, security and compliance departments are aware that a change to WHOIS access is on the horizon is an important first step. Just knowing that the ability to uncover domain ownership information is likely to change in the future will help to relieve some of the angst that is likely to occur. more

The defining of rights in the UDRP process is precisely what WIPO and ICANN contemplated, but it is unlikely they foresaw the destination of the jurisprudence. Since its inception, UDRP Panels have adjudicated over 75,000 disputes, some involving multiple domain names. (These numbers, incidentally, are a tiny fraction of the number of registered domain names in legacy and new top-level domains, which exceeded 320 million in the first quarter 2017). more

The way the Internet operates drove a wedge between strings of lexical and numeric characters used as marks and alphanumeric strings used as addresses. Domain names were described by Steve Forbes in a 2007 press release as virtual real estate. It is, he said, analogous to the market in real property: "Internet traffic and domains are the prime real estate of the 21st century." more

Unicode's goal, which it meets quite well, is that whatever text you want to represent in whatever language, dead or alive, Unicode can represent the characters or symbols it uses. Any computer with a set of Unicode typefaces and suitable layout software can display that text. In effect, Unicode is primarily a typesetting language. Over in the domain name system, we also use Unicode to represent non-ASCII identifiers. That turns out to be a problem because an identifier needs a unique form, something that doesn't matter for typesetting. more

Before the Internet, the sole competition for strings of characters employable as marks was other businesses vying to use the same strings for their own products and services. National registries solved this competition by allowing businesses in different channels of commerce to register the same strings but prohibiting competitors in the same industries from using identical or confusingly similar marks on the grounds that they were likely (at best) to create confusion and (at worst) to deceive the public. more

On January 24, 2018, ICANN's Business Constituency (BC) and Intellectual Property Constituency (IPC) co-hosted an event to discuss the EU's General Data Protection Regulation (GDPR) and its implications on access to the WHOIS database. ICANN's CEO and General Counsel joined the discussion, as did stakeholders from across the ICANN community. The event was timely and well attended with over 200 participants attending in-person or virtually. more

I am a student of life, learning one hard lesson at a time. In fact, I actually dropped out of my last year of college to start a tech company in a new space called the internet. I was an entrepreneur running an online service prior to the advent of the world wide web in 1992, back when Pine, Usenet, and Gopher ruled the information superhighway. Over the last 25 years, I have learned a great deal about technology adoption cycles by launching six internet companies, each at the forefront of a new technology wave. more

The Trademark Act of 1946 defines trademarks and service marks to include "any word, name, symbol, or device, or any combination thereof." Marks composed of lexical and numeric elements (as opposed to images) also can be described as strings of characters. Before the Internet there was no commercial use of such strings other than as marks, but the functionality of the Internet depends on strings of lexical and numeric characters in the form of domain names that serve as electronic addresses. more

The typical daily accounting of decisions filed in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) may include an award or two dismissing complaints (three is particularly noteworthy: weddingfleamarket.com, dme.com, and scheduleflow.com from the Forum for January 20, 2018), but overwhelmingly complaints are granted not dismissed. Let us imagine a trademark or service mark that is neither a dictionary word nor composed of common combinations, would anyone be surprised when the Panel rules in Complainant's favor? more

Black's Law Dictionary defines it as "the extraterritorial operation of laws; that is, their operation upon persons, rights or jural relations, existing beyond the limits of the enacting state, but still amenable to its laws. The term is used to indicate jurisdiction exercised by a nation in other countries, by treaty..." Extraterritoriality is also the most significant emerging development today in the law shaping virtual network architectures and services that includes OTT and NFV-SDN. more

Promoted Post

Buying or Selling IPv4 Addresses?

Watch this video to discover how ACCELR/8, a transformative trading platform developed by industry veterans Marc Lindsey and Janine Goodman, enables organizations to buy or sell IPv4 blocks as small as /20s.

Avenue4 LLCRead4522

A World-Renowned Source for Internet Developments. Serving Since 2002.